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Patent law and the Supreme Court: certiorari petitions denied - July 2015

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently denied petitions, organized in reverse chronological order by date of certiorari petition.

2015

Ultramercial, LLC v. WildTangent, Inc., No. 14-1392

Questions Presented:

Whether computer-implemented or software-based claims, reciting novel or non-routine steps with no conventional counterparts, still cover only patent-ineligible “abstract ideas” as this Court has interpreted 35 U.S.C. § 101?

Did the Federal Claims Court err in avouching that the “Maintenance Fees” and the Patent System put in place “Do Not Conflict with the Constitution”?

Did the Federal Claims Court err in finding that Congresses’ determination of Federal spending priorities and how the patent system fit into National Development Goals is an eminently “Rational” exercise of its power?

Did the Federal Claims Court err in finding that the early expiration of her Patent did not constitute a taking by the Government, but rather was consequence for her failure to fulfill the requirements upon which her patent was conditioned?

Did the Federal Court of Claims err in declining the challenge of the “First to File” system *ii given the Court’s deference to Congressional discretion over Patent Legislation?

Did the Federal Claims Court err in determining that the expiration (lapsing) of over 1,500 Patents on Tuesday of every week (79,00[0] per year) for nonpayment of “Maintenance Fees” are “RATIONALLY” related to the promotion of “PROGRESS” in “Science and the Useful Arts”.

Is the publication of the invention after eighteen months an unconstitutional taking of private property?

Is Congress protecting Small Business and Independent Inventors rights?

Inequitable conduct is a judge-made doctrine designed to ensure the integrity of patent prosecution before the US Patent and Trademark Office (“PTO”). Under that doctrine, a patent is unenforceable if clear and convincing evidence shows that the inventor intentionally withheld or misrepresented information about the prior art that would have been material to the PTO’s decision to issue the patent.

Here, the Federal Circuit applied that extraordinary remedy to hold unenforceable a patent on a previously unknown process for producing a drug, because its inventor did not disclose that a competitor might be using the process in secret. The court treated the inventor’s suspicions—based entirely on non-public, internal tests on the competitor’s product—as material “prior art” that needed to be disclosed in arguments to the PTO during the prosecution of the patent. The Federal Circuit thus held the patent unenforceable, even though the PTO rejected the inventor’s arguments, possessed all the prior art discussing the competitor’s drug, and issued the patent only after the inventor amended his patent application to distinguish it from the prior art.

The questions presented are:

Whether the secret process used to make an existing product is material prior art that must be disclosed to the PTO in a later inventor’s application to patent a similar or identical process.

Whether alleged misconduct that does not induce the PTO to issue a patent can render that patent unenforceable.

When an applicant for a patent amends a claim to overcome the Patent and Trademark Office’s earlier disallowance of the claim, should a court (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held?Cert. petition filed 12/4/14.

Compare jurisdictions: Arbitration

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